A Guide for Researchers
What is the technology transfer process?
What is an invention disclosure?
When is a copyright appropriate?
What is the technology transfer process?
In general, the process begins with you completing the Invention Disclosure form. In addition to addressing some specific technical and economic assessments of the technology in question, you will also need to secure signatures from your dean (if a student, you will need your research managing faculty member's signature as well). After you submit your completed Invention Disclosure form to our office, the OTT Licensing Associate handling your case will send you a confirmation letter and establish an IP assessment review session with you.
Please familiarize yourself with the online literature search resources in connection with your Invention Disclosure. You should expect to spend a few hours at the library or on either the F.D. Bluford Library, UNC (NC live), and/or the U.S. Patent and Trademark Office (USPTO) online database searching for inventions similar to your own. It is very important at this stage that you search for other material which is the same, or most similar, to your invention. This is an important early step in assessing how broad the available patent protection for your invention could be.
With this information in hand, you will then meet with your Licensing Associate to discuss the potential patenting and licensing of your invention.
What is an invention disclosure?
An invention disclosure is a written record of a complete description of the invention and how it is made and used containing sufficient detail to permit a skilled reader to duplicate the invention and to describe the basic nature of the invention to an inexperienced reader. The essential elements of a disclosure are a complete description of the invention, the inventor's dated signature, and dated signature of witnesses who fully understand the invention.
A disclosure serves three different purposes at the University:
- It serves as a vehicle for communication within the University to describe the invention to the Office of Technology Transfer (to initiate the evaluation process) and the Intellectual Property Committee (for recommendations on ownership, patenting and licensing actions).
- It provides preliminary information to patent attorneys for a patent search and forms the basis of the patent application.
- It serves as a witnessed invention record to help establish date of conception and/or reduction to practice in the event of a patent interference action. Witnesses serve to corroborate the inventor in case of a patent interference action; the use of more than one person as a witness will be available if needed at a later date.
Documents:
When do I disclose?
Disclose first, publish later. While publications are important in disseminating information about discoveries, the time of publications may prohibit patenting. In the U.S. an inventor has a grace period of one year to file an application after disclosure through publication. If, however, a development is published before the filing of an U.S. patent application, patent rights in most foreign countries are lost.
A patent is a special type of publication which describes the invention to the public in exchange for protection against unauthorized use. If the invention already has been published (that is, in the public domain), the inventor, in effect, had nothing to exchange for the patent protection.
Publication in the legal sense is difficult to avoid. Articles in newspapers, newsletters, bulletins, textbooks, journals, theses and report all qualify as publications. Oral presentations may constitute publication, as would distribution of a paper at a public meeting. The key test is that the publication must be enabling -- it must describe the invention in sufficient detail that it could be duplicated or put into use.
Disclose your idea to the Division of Research as soon as the invention is clearly conceptualized. The best advice is to consider any presentation outside your institution, whether oral or written, as a public disclosure and contact the Division of Research for specific advice on the timing and ramifications of publication.
What is a patent?
A patent is a property right granted by a sovereign nation which gives the holder the exclusive right to exclude others from the manufacture, use, and sale of an invention for a period of years.
A patent can be thought of as a contract between the inventor and the government. In exchange for the inventor's disclosure of a new invention to the public, the government grants the inventor the right to exclude others from making, using or selling the defined invention. As property, a patent may be sold or assigned, pledged, mortgaged, leased (licensed), willed, or donated. Commercialization may be accomplished by the owner exercising the rights referred to above, or by permitting others to exercise rights under the terms of one or more licenses.
To be patentable, an invention must be judged to satisfy three criteria:
- Novelty - To be patentable an invention must be "new". Even though an invention is new to the inventor, it is not patentable if another inventor made the same discovery earlier. If it has been used or sold, or known by others, patented, or disclosed in a printed publication, or in public use, a new patent is barred.
- Utility - The invention must be of some degree of use for some purpose that is not immoral.\
- Nonobviousness - Mere simplicity does not bar a patent. However, the invention must not be obvious to a person who has ordinary skill in the art at the time the invention was made and is aware of previous work in the field.
When is a copyright appropriate?
A copyright is a legal mechanism that provides a creator of works of art and literature the right to control how his or her work of art or literature is disseminated. Copyright protects the expression of ideas, not the ideas themselves. The author or creator has intangible exclusive rights over their work, including the right to reproduce, distribute, adapt or perform the work. This protection is available to both published and unpublished works.
The primary elements of NC A&T’s copyright concepts fall into two broad categories:
- Category 1, the External Source Infringement Protection category - addresses the "Fair Use" doctrine; and,
- Category 2, (Researcher) Copyright (IP) Ownership is actually dependent upon which subgroup of faculty scholarly enterprise any member of the A&T community’s work would most appropriately be judged to fall into. These may be grouped into matters of:
- Traditional Work (Non-Directed)
- Directed Works
- Extraordinary Traditional Work
- Distance Learning Materials
- Sponsored Works
- Software
- Work for Hire
Here’s how these issues are typically viewed and decided.
| Type of work | Ownership |
| Academic or traditional work (nondirected) | Faculty member |
| Directed works | University/institution |
| Extraordinary traditional work | Faculty member negotiates cost recovery based on % contribution |
| Distance learning materials | Joint ownership |
| Sponsored works | Sponsor |
| Software | University; faculty member may retain non-exclusive license |
| Work for hire | University |
